Decision for dispute CAC-UDRP-107280

In addition to the above factual assertions, the Complainant also contends the following:

(a) The disputed domain names are confusingly similar to the Complainant’s Trademark. Complainant's Trademark is integrally reproduced within all of them, and the additional word elements “elevator(s)” or “lift” are merely descriptive of the goods/services advertised and offered in the respective websites. Further, the element “bd” appearing within some of the disputed domain names, refers to the country of Bangladesh, and has a minor impact to the visual impression of the signs, while conceptually it does nothing but introduce a geographical element to the concept of “Siemens Elevator”. Looking at the websites under the disputed domain names, the consumers will understand that the Respondent is offering Siemens elevators in Bangladesh. 

(b) The Respondent is not affiliated with the Complainant nor authorized by it in any way to use Complainant’s Trademark. The Complainant does not carry out any activity for, nor has any business with the Respondent. The Respondent has also not been commonly known with the disputed domain names. The Respondent has not used and is not currently using the disputed domain names in connection with a bona fide offering of goods or services. Quite to the contrary, all the disputed domain names are being used to advertise and offer for sale elevators, escalators and related products and services under the fraudulent statement that these are commercially originated by the Siemens Group. Therefore, the Respondent has no rights or legitimate interests in respect of the disputed domain names.

(c) In all four websites under the disputed domain names, the Complainant's Trademark is featured multiple times, while promotional text is added to further persuade the consumer that the counterfeit elevators being advertised are genuine Siemens products. The Respondent also uses false claim that Siemens Elevators are "division of Siemens AG" and also the image of a supposed "Siemens" elevator factory is completely fake and purposefully fabricated by the Respondent to persuade the public that the Complainant is active in the elevator industry and the Respondent is distributor of such Siemens elevators in Bangladesh. Moreover, this is not the first time that the Respondent is using fraudulent domain names to offer its counterfeit “Siemens” elevators. In 2023, the Complainant obtained through UDRP before the Czech Arbitration Court other 4 domains, owned, at the time, by an individual under the name “Arifur Rahman” (case no. CAC-UDRP-105926). These domain names, namely <siemens-elevatorbd.com>, <siemenselevatorbd.org>, <siemenselevator.org> and <siemens-elevator.com>, were very similar to the domain names disputed at present and were also used for the very same purposes. As a result, the disputes domain names have been registered and are being used in bad faith.

RESPONDENT:

The Respondent did not provide any response to the complaint.

Paragraph 4(a) of the Policy requires that the Complainant proves each of the following three elements to obtain an order that the disputed domain name should be transferred or revoked:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The Panel will proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied in these proceedings.

RIGHTS

The Panel fully agrees with the Complainant that the disputed domain names are confusingly similar to Complainant’s Trademark. They reproduce Complainant's Trademark in full and addition of non-distinctive term such as "elevators", "lift" or "bd" cannot diminish confusing similarity of the disputed domain names to Complainant's Trademark.

For sake of completeness, the Panel asserts that the top-level suffix in the domain name (i.e. the ".com") must be disregarded under the identity / confusing similarity test as it is a necessary technical requirement of registration.

Therefore, the Panel concludes that the Complainant satisfied the requirement under paragraph 4(a)(i) of the Policy.

NO RIGHTS OR LEGITIMATE INTERESTS

The Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain names. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (for example, WIPO case no. D2003-0455, Croatia Airlines d.d. v. Modern Empire Internet Ltd.).

As asserted by the Complainant (and unchallenged by the Respondent), the Respondent is not affiliated with the Complainant nor authorized by it in any way to use Complainant’s Trademark. The Complainant does not carry out any activity for, nor has any business with the Respondent. The Respondent has also not been commonly known by the disputed domain names. The Respondent operated websites under the disputed domain names that refer to Siemens elevators and similar products deliberately creating false impression that Siemens is active in elevator industry and the Respondent is distributor of such Siemens elevators in Bangladesh as a "division of Siemens AG". Such conduct clearly cannot constitute right or legitimate interest of the Respondent to the disputed domain names.

Therefore, the Panel concludes that the Respondent did not establish any right or legitimate interest to the disputed domain names (within the meaning of paragraph 4(a)(ii) of the Policy).

BAD FAITH

The Panel also finds that the Respondent must have registered the disputed domain names in the full knowledge of Complainant’s Trademark, as the Respondent’s websites clearly use Complainant's Trademark as well as the well-known Siemens logo. The Respondent deliberately created false impression that Siemens is producing elevators and the Respondent is authorized distributor of such elevators in Bangladesh as "division of Siemens AG" although neither of these statements is true. Such conduct is crystal clear evidence of bad faith of the Respondent in registration and use of the disputed domain names which is further evidenced by the fact that the Respondent already engaged in the same conduct in the past resulting in forced transfer of similar domain names from the Respondent to the Complainant based on the decision no. CAC-UDRP-105926.

As a result, the Panel found that the disputed domain names have been registered and are being used by the Respondent in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).